Passionate about IP! Since June 2003 the IPKat has covered copyright, patent, trade mark, info-tech, privacy and confidentiality issues from a mainly UK and European perspective. The team is Eleonora Rosati, Annsley Merelle Ward, Neil J. Wilkof, and Merpel. Nicola Searle is currently on sabbatical. Read, post comments and participate! E-mail the Kats here

The team is joined by GuestKats Mirko Brüß, Rosie Burbidge, Nedim Malovic, Frantzeska Papadopolou, Mathilde Pavis, and Eibhlin Vardy

Thursday, 31 May 2012

Does too much smoking make you runout of puff? Not if you're a train ...

This member of the IPKat team, who is actually a confirmed and enthusiastic non-smoker, has been charged from time to time with being "soft on the tobacco industry" by giving space to its apologists so that they can air their objections to proposals for plain packaging of cigarettes and other tobacco products so that they would be sold without effective branding (see, for example, earlier posts here, here, here and here, together with a quantity of readers' comments, many of which are well worth thinking about). This criticism, he feels, is entirely unfair: it is not his support for the tobacco industry or his fear of losing its support that has motivated him, but rather his enthusiasm for the positive attributes of branding. However, being as keen on fair play as he is on branding, and noting that today is the World Health Organization's World No Tobacco Day 2012, he is very happy to yield the floor to his friend and academic colleague Professor Mark Davison (Monash University, Australia), with whom he had a brief but enjoyable exchange of views at this month's International Trademark Association (INTA) Meeting. This is what Mark has to say:

Much has already been written in the IPKat about plain packaging of tobacco products. The Australian legislation will come into effect on December 1. The effect of the legislation can be summarised as follows:

1. The use of non-word trade marks such as logos and colour schemes will be prohibited on retail packaging.

2. Word trade marks may be used but only in a designated font size and font face. The space available for the insertion of word trade marks is limited and textual and graphic warnings will take up the majority of the packaging.

3. The background colour of the packaging will be a drab brown. Consequently, the packaging will largely consist of drab brown packets with large textual and graphic warnings together with a small space at the bottom of the front of the pack for the brand name of the cigarettes.

4. The registration of tobacco trade marks may continue and existing and new registrations will be immune from non-use actions.

The discussions of plain packaging initiatives
often involve considerable conflation of two distinct issues. The first is whether
such moves contravene international or domestic legal obligations relating to
trade marks. The second is a quite separate issue of whether such moves, if
legal, would be a good idea.

As to the first, much has already been
written on the topic but that which claims the measures contravene the TRIPS
agreement or that they constitute ‘expropriation’ are quite vague about why
that is so. In particular, the correct statement that a trade mark is property
is often followed by an incorrect assumption about the nature of the rights
associated with that property. There is simply no right to use a trade mark
under the TRIPS agreement and the arguments to that effect are considerable (here). The
only right given is a right to prevent others from using one’s trade marks. The
absence of a right of use has a considerable impact on the argument about expropriation.
If a right of use does not exist, how can it be taken? Even if property is
taken, expropriation also involves an acquisition by government of that
property. Governments considering plain packaging measures have no intention or
desire to acquire or use tobacco trade marks.

As for the second issue, there is no doubt
that the interests of the tobacco industry are substantially affected by these
measures. Those opposing them suggest that ‘other measures’ be taken in order
to achieve a balance between public health concerns and intellectual property
considerations but rarely identify with precision what those other measures
might be in a context where other forms of promotion of tobacco have already
been prohibited. Prohibition has been
suggested by some but it is not entirely clear how that is a better outcome for
trade mark owners. It is also not clear what would be the efficacy of making
criminals of 15% of the Australian adult population overnight for using a
product to which they are already addicted.

Ultimately, the question becomes whether
there are any products whose sale should not be promoted in any meaningful
manner. If so, perhaps that product would be one which, when used in accordance
with the manufacturer’s intentions, leads to death as a direct consequence of
usage (here),
the mortality rate from use of the product is 10 times the national road toll, (hereand here), 15 times
the mortality rate for alcohol abuse (here),
the product is addictive, the addiction is on a par with cocaine and heroin (here),
the age of the majority when they become so addicted is less than 18, (here)
and (here)
and the packaging is clearly attractive to the young(here. Arguments
about ‘individual responsibility’ may diminish in the light of the latter facts
except when made by the most ardent libertarians. The difficulty with arguments
about balancing intellectual property rights with public health considerations is
that the arguments become meaningless when right holders fail to identify with
precision the nature of those rights and fail to engage with the details of the
evidence of the nature and extent of the tobacco problem. The tobacco industry
does not have a distinguished record of engaging in meaningful discussion of
such issues.

Well, says the IPKat, that puts the case pretty powerfully. Is Mark's case unanswerable? Should these arguments be extended to cover other actually and potentially health-damaging products and services? Do let us know!

Wednesday, 30 May 2012

﻿ Moments ago (at least it was had it not been for the continued Blogger issues), a press conference was held following today's session of the Competitiveness Council - the last under the Danish Presidency (watch video here). The first issue that arose, unsurprisingly, related to the adoption of the unitary patent proposals. The Danish Minister for Business and Growth, Ole Sohn explained that as of today, no agreement on the seat of the Central Division had been reached. He said:

"I would like to start by looking at one of the issues which I would imagine is of interest and that is the question of the patent court. Adopting the European patent reform will be a major step forward to strengthen the competitiveness of European companies. A clear signal that we are taking concrete measures to boost growth and employment in Europe. Just to give you an example, today, it costs about €36,000 to obtain a patent in Europe whereas it only costs €2,000 in the US and €600 in China and that just goes to show the extent of the challenge we are facing and how important it is that we find a solution on the patent issue so in this way we can contribute to reinvigorating growth in Europe. The Council has done a lot of the ground work. There is one remaining issue - the location of the Central Division of the first instance court. We in the Danish Presidency have worked intensively on this since we started our Presidency to try and find a solution. Unfortunately, by today we have not found a solution that everyone can support. Unfortunately, obviously we very much regret that fact but I am an optimist. There are 31 days remaining of the Danish Presidency and the Heads of State of Government have committed themselves to finding a solution by the end of June. We still believe that even if we cannot solve it today, we will manage to solve it during the Danish Presidency."

"There is also the very important and symbolic project that hundreds of thousands of companies have been waiting for - this unified patent that European business is eagerly awaiting so that it can stand on same footing as their US and Chinese coutnerparts. The number of patents that are submitted to the Chinese court increased to the tune of 30% per year so we really have no time to waste on this. Its an on-going process of course. Hopefully it will come to an end at the European Council. I submitted this proposal more than a year ago now and we hope that we will reach a result that is in line with the European economy."

Following a question from the press regarding how extensive and how long the Member States negotiated on the issue of the Unified Patent Court, Minister Sohn stated:

"The Danish Presidency has been negotiating on this since day 1. I don't know how many days but until the very last day of the Presidency and we have been discussing this in the Council and also bi-laterally with some of the key players and its still our view that we will be able to find a solution. We have come to the point that the only outstanding point is the location of the Central Division of the first instance court and as I said at the Council meeting."

Minister Sohn conintued by summarizing what the AmeriKat feels characterizes the long slow march to mediocrity in European legislative efforts:

"I appreciate the good arguments put forward by the countries who are putting forward their pitch, but obviously you try to get the person you love in life but sometimes you realize you got to live with the one you get. So people have to demonstrate that sort of flexibility here too. We are going to work really hard to achieve success by end of 2012."

A further question was posed by a member of the press asking whether the Council could explain to companies why the negotiations were taking so long. In reply, Minister Sohn stated:

"Could I start by stressing the fact that I hope and believe that we will arrive to a solution by the end of June, but there aren't any good arguments for not coming up with solution, if you are trying to explain this to European industry because for every day that goes by we are piling on additional costs for European industry to obtain EU patents compared to, as I said in my introduction, the costs in US and China. So there are not any good arguments, but solutions some time take time when there is more than one person involved in negotiations. It has taken a little longer than I would have liked. But as long as our target, and its been our target since Day 1, to get this sorted before July 2012 than I think we can still meet this target. But there are no good arguments for not arriving at a solution."

A question from Bloomberg asked the panel to identify the countries who were in the running for the seat of the Central Division. Reinforcing the lack of transparency regarding the entire process (see earlier post this morning), Minister Sohn stated:

"I think it would be wisest to continue the negotiations and discussions between the players within the Council and not so much in public debate because the more public it becomes the harder it is to arrive at a solution. It is well known that Germany, the UK, France and other countries are keen to obtain the court of first instance, but on the specific of the details I will tell you about at the end of June when we will hopefully have a final result."

Having been through this before, its now time for the AmierKat's head to slam against the table....

The AmeriKat imagines that many will join her in stating that her blood boiled regarding some of the statements made by Minister Sohn and Commissioner Barnier. Yet again, it seems that none of the concerns of European industry (not just the patent lawyers) regarding the current proposals have sunk in. Again we hear comments regarding the relative expense of the current system as opposed to US and China - not taking into account the realities of the patent application and grant fees in practice and the baselessness of some of these figures. Even more outrageous were the comments implying that European businesses are desperate that the currently proposed package be agreed. The AmeriKat has not spoken to ONE member from industry that wants this package - they'd rather have nothing than this, so she is unsure where this purported desperation is stemming.

Further, comments that there is only there being "one last outstanding issue" obviously does not accord with the previous understanding by practitioners and indeed, Baroness Wilcox and her team (see previous AmeriKat posts here), but of course who knows what happens behind the closed doors of the unitary patent negotiations. Unless an agreement can be reached in just over 2 weeks, it is unlikely that the European Parliament's scheduled reading and vote on 13 and 14 June will proceed.

The question is, of course, are the events of December's Competitiveness Council repeating itself? Is the "outstanding issue" on the location of the Central Division another delay tactic? Given the lack of transparency in this process, we will have to await Baroness Wilcox's report of the session to the House of Commons Scrutiny Committee and hopefully, their robust reply to clarify the truth in there being only one "last outstanding issue".

The AmeriKat tentatively testingthe quality of the sun this morning...

Good morning from the AmeriKat! Today the Competitiveness Council meets to determine the fate of the unitary patent package (see previous posts hereandhere). In the preceding days, Ministers from the Member States have been briefed by their government's staff, stakeholders and industry members and will no doubt be preparing for, as Baroness Wilcox characterized it during her evidence before the Scrutiny Committee, a session of "who can stay in the room the longest". A press conference is scheduled later today after the Competitiveness Council's meeting (which the AmeriKat hopes to report on -- IT problems permitting).

Dr. Jochen Pagenberg

It is no overstatement that the profession and industry will nervously be watching events in Brussels today in the fear that the overzealous pursuit for a cheap, but costly, political victory will overrule the unified articulation by the patent community of their considered conclusion that the unitary patent package is inherently flawed. The AmeriKat and IPKat have both reported and commented on the lack of transparency in the European legislative process.

The legislative process by which we have reached the position in respect of the unitary patent is a prime example of this symptom of lawmaking. This morning in advance of the meeting today, Dr Jochen Pagenberg (Bardehle Pagenberg) wrote to President Van Rompuy on the EU Patent Package. Dr Pagenberg wrote in the following terms:

Dear President Van Rompuy,

I am writing to you in the above matter because of great concerns of part of industry and practitioners as to the present status of the patent package, the lack of information and cooperation from the instances in Brussels and how this matter has been and is being handled in the Council, the Parliament and the Commission. Representatives of German industry had therefore asked me to provide a summary of the present situation, and in the course of my research I detected a number of unusual incidents which happened during the legislative process in Brussels. You will find attached an article in its English version which had already been distributed in German four weeks ago and will be published in German in the journal GRUR in a few days.

I was a member of the Expert Committee of judges and attorneys of Dr Fröhlinger and have devoted more than 50% of my time in the last three years to this project, during two years as a president of the European Patent Lawyers Association. I thought that this was justified, since I had always hoped that five of the best patent judges in Europe and five of the most experienced litigators had been chosen by the Commission with the goal to reach the optimal result for a patent litigation system which would work in practice and thus become attractive for the users after its entry into force. It was the general hope of the future users that it would be affordable not only for big industry but also for SMEs as it had been promised over all those years in every document of the Commission and the Council.

In November of last year I became convinced that these goals had gradually – and secretly - been abandoned and that the Commission and the Council were no longer interested in the recommendations of its own experts. One member of the Judicial Committee of the EP Parliament even called the experts “lobbyists” during the debate on the Patent Regulation and voted with the majority of his colleagues against one of the basic recommendations of the experts, namely not to expand the jurisdiction of the European Court of Justice in the area of patent law by including substantive provisions on patent infringement into the draft Regulation. I therefore decided at the beginning of 2012 to leave the Expert Committee.

This abandonment of the original goals in addition occurred behind closed doors in an unprecedented process of legislation which would nearly have led to signatures of the Council under papers of the “patent package” which had never seen the light of a public discussion. All this you can read in the attached article.

It appears that we are again in a similar situation as in December, since dates for deliberations in Parliament have been announced and the users fear a signing of a text of the draft Agreement which they have never seen or discussed. You may not be informed of the details of the patent packageand its legal and practical deficiencies, but the details of how this dossier has been handled by the instances in Brussels over the last six months show such an amount of undemocratic behavior that few people in Europe would have imagined. I attach the two latest documents which have been cited in my paper for easy reference. [here and here]

That it is the official belief of the members of the General Secretariat of the Council to hide legislative texts from public discussion because they fear that otherwise users and the members of national parliaments would learn about negative impacts of the project and therefore would oppose and refuse ratification, is more than surprising. The same can be said about the Council as a whole which confirmed in its session of March 8 by a large majority that the respective unpublished papers should remain secret. But there are more incidents which also concern the Parliament and the Commission as you can see in my paper.

I think – and this belief is shared by everyone I have talked to during the last weeks – that it is your obligation to prevent that this important project will forever be tainted with these incidents during the legislative process and already for this reason will fail. There are in addition many flaws which have found their way into the texts as a result of political compromises which again have never been discussed with users. Compromises may be a necessity in politics sometimes, but not where the goal was to achieve the best of, or at least a better than, existing patent litigation systems. The multiplication of compromises has resulted in an unworkable solution which industry will no longer wish to use because of serious drafting errors of people who obviously have no practical experience in patent litigation and are not interested in any advice of those who have.

The time until the end of the Danish presidency will be too short to devote enough time to this project. It is also too important for economic reasons, so that the Council should not treat it as an unwelcome side issue on the agenda besides the larger issue of the Euro crisis. Users have requested since more than half a year more time for being finally included in the deliberation process. There are a great number of points discussed in the report of the Scrutiny Committee of the UK. I have also made a few rather simple proposals in my paper which may serve as a starting point; but more detailed discussions will be needed.

As you may have learned first publications on the lack of transparency have become known in Germany already several weeks ago with articles in legal journals and commentaries in the daily press of which I attach one example. But a reaction from the Council has not become known so far. I will therefore send copies of this letter to the press and selected publications and I am looking forward to any comments you might have.

Please excuse the form of my letter, but time pressure did not leave any other possibility than sending this by email.

Very truly yours

Jochen Pagenberg

The AmeriKat, IPKat and numerous practitioners support Dr Pagenberg's position and thank him for taking this step in writing to President Von Rompuy on these issues. Readers of the IPKat will know that, since last autumn, the AmeriKat's frustration as to the lack of transparency in this process has escalated in recent months. Calls for clear indications as to the procedure of the legislative process, the status of negotiations, disclosure of opinions and the very texts on which Member States are due to vote have all resulted in a deafening silence from Brussels. The legislative process is meant to be open and transparent, so that those who will most be affected by laws are able to understand the scope and implications of a law by which they will soon be bound. Merpel believes that refusing to open a dialogue with the public over its concerns regarding problems with the substantive provisions and lack of transparency smacks of arrogant politicians willing to sacrifice what is in the best interest of their electorate for a cheap political victory.

It may all be too late, however. Indeed the AmeriKat understands that the location of the Central Division has already been secretly agreed a few days ago. Of course that could just be a rumour, but will have to wait until this afternoon to find out. In the meantime, the AmeriKat bids you a perhaps, apropos, "au revoir ....".

A Kat confesses. To clear up any remaining doubt, and to stem the continuing flow of emails from the four corners of the globe, Merpel has this to say: In Monday’s post, “To ™ or not to ™? A reader writes ...” (here”), Merpel added as a final comment:

“ How about an official depository of signs used as unregistered trade marks, together with a list of goods or services covered by their non-registration …?”

She was only having a little fun and did not mean this suggestion to be taken seriously. Yes, it might be a good task for the European Commission to give the Office for Harmonisation in the Internal Market to tackle once it finishes with the IP Observatory, but the whole point of unregistered marks is that they’re ,er, unregistered.

No, no -- I distinctly said"mediation", not "meditation"

While we’re on the subject .... In the very same post —“To ™ or not to ™? A reader writes ...” (here) — the IPKat happened to mention that the letters “TM” also stood for transcendental meditation”; a reader has since written to castigate him for spelling “transcendental meditation” in lower-case lettering since both “transcendental meditation” and the letters TM are trade marks. The Kat is unimpressed. A brief search of the UK IPO database shows him that, while there are various registrations of figurative marks which include the words “transcendental meditation”, there are no UK or Community trade marks for the words alone. True, an application has been made to register the words “transcendental meditation” as a trade mark— but not for transcendental meditation. The application, for goods and services in Classes 16, 35, 41, 44, 45, covers such gems as “advertising; business management; business administration; office functions” in Class 35 and, more worrying for those of our readers who can expect to face further competition, “legal services; security services for the protection of property and individuals; personal and social services rendered by others to meet the needs of individuals” in Class 45.

This may not change your life, but it has been reported in one of Europe’s most influential publications, The Decanter, that “EU wines may now be labelled 'organic'”. In short, EU-produced organic wines have won the right to use the labels ‘Organic Wine’ or ‘Vin Biologique’, in place of ‘wine issued from organic grapes’. In real terms,

”The new organic wine-making rules introduce a technical definition of organic wine. These rules include 30-50% less added sulphur than conventional winemaking, no use of additives such as sorbic acid, and a full traceability processes”.

A katpat to Cat the Kat, who has a fine nose for wine.

Why trample on moralrights when you canexterminate them?

Around the weblogs. It was hot news yesterday but it will be even hotter today: the Court of Appeal decision in the first round of the Apple v Samsung tablet litigation in England and Wales will be handed down later today. Background details are available from the Class 99 webloghere. “Is facilitating SME access to the legal profession enough to give them the advice they need?” That’s theprobing questionwhich Shireen Smith asks on SOLO IP. Over on Paid Content, the excellent Jeff John Roberts reportson an Arizona man’s attempt to obtain a judicial declaration that the word “Google” is generic and that, therefore, the company’s trade marks for internet search are invalid (a katpat to Lee Curtis for spotting this). And here's a sensation -- another punchy guest post from Mira T. Sundara Rajan for the 1709 Blog as she asks the question "Is Apple deleting the history of music?"

Feeling mandatory? Fancy a conference? Article 4a of the European Patent Convention (EPC) reads as follows:

A conference of ministers of the Contracting States responsible for patent matters shall meet at least every five years to discuss issues pertaining to the Organisation and to the European patent system.

The EPO Conference under Article 4a:some nations that have given reluctant support the latest EU proposals may relish the chanceto do a ewe-turn ...

AsEPC 2000came into force in December 2007, this indicates a conference of ministers should be held this year. There are plenty of live issues pertaining to the Organisation and to the European patent system, for example:

* The unitary patent and the unified patent courts[Merpel is sure that the non-participating states in the latter would like a say as to how this would affect the workings of the EPO];

* Lobbying by the USA for harmonisation with the America Invents Act [how do you politely say no?];

* The perennial subject of backlogs[and the EPO’s ability to increase them through ill-thought changes in (e.g. divisional) practice].

And, at the least, one would expect a report for ministerial consideration on the workings of the changes introduced by EPC 2000: otherwise why was the seemingly mandatory Article 4a introduced?

Nothing to do with Richard. The IPKat's friend Richard Pinckney (an associate with Bristows) has an unusual surname which, as luck would have it, he shares with a party to a recent piece of French litigation which has been referred to the Court of Justice of the European Union for a preliminary ruling (see 1709 Blog posts hereand here). Richard has nothing to do with this action, so please refrain from asking him for inside information about it!

Tuesday, 29 May 2012

Radio Frequency Identification (RFID) technology doesn't often get a mention on this weblog, despite its usefulness in the fight against fakes. However, the IPKat thought it would be worth drawing it to his readers' attention, having just been captivated by a recent BBC news item from Malaysia, "RFID technology thwarts bird's nest counterfeiters", by Jennifer Pak, here. The article reads, in relevant part:

"One of the most coveted beauty products in Asia is found inside a damp and dark three storey house in southern Malaysia's Johor state. The delicacy is spun from saliva [the Kat is not making this bit up ...] and it will soon land in someone's soup, as people in China believe that eating bird's nest is good for their skin and they're willing to pay up to US$100 just for a handful. It's a lucrative industry and counterfeits have flooded the market.

Safety concerns last July effectively halted all exports of bird's nests to China from Malaysia, the world's second biggest supplier of the delicacy.

The Malaysian agricultural ministry says its edible bird's nest industry is worth RM5b ($1.59bn; £1.01bn) [... or this bit]. That is why the government is now investing in Radio Frequency Identification (RFID) to boost consumer confidence. It's one of the most common reasons why Asian governments use the technology.

RFID allows a product to be easily tracked from the source to the consumer. The bird's nests can be sealed in a box with an RFID tag that contains a microchip [shouldn't that be micro-"cheep", wonders Merpel] embedded with details about the harvest. A handheld scanner emits a radio frequency to unlock that information. It may sound similar to barcodes, but RFID tags are said to be harder to duplicate.

... The final product can only contain saliva. Still, it is hard for consumers to tell if a bird's nest is real or not so [Yanming Resources] has been forced to lower prices in order to compete with counterfeits. But with RFID, every step of this laborious process, from harvesting to packaging, is tagged. The data is stored centrally with the government. This official support will be key for consumers.

In essence the RFID becomes a certificate of authenticity, says Yow Lock Sen, who is in charge of overseeing the government project. The system is still being perfected, but eventually customers who have safety concerns will be able to trace the origins of the product by simply downloading a free app onto a smartphone, and scanning the RFID tag on the product.

Although it is a government research project, participation from the industry is voluntary since it requires companies to buy the RFID tags and reading equipment. ..."

The IPKat, who is fascinated by this, wonders whether the sale of fake bird's nest is the sort of thing that would be protected by an "extended passing off" action in the United Kingdom and whether the bird's nest concept might be protectable as a Traditional Speciality Guaranteed in the European Union. Merpel still feels uncomfortable about eating anything that is essentially saliva and wonders what other strange and squirm-making bits of the body and its excrescences might also be regarded as delicacies at dining tables braver than hers.

Monday, 28 May 2012

“A Kat reflects”. On 12 June 2012 this member of the IPKat weblog team takes time off from his gruelling training schedule ahead of the London Blogging Olympics O******s in order to devote some time to Union activities. The Union in question is the Union of European Practitioners in Intellectual Property and he is attending a meeting of its British cell. Since the Union couldn’t afford the prices at The Old Nick and they don’t have good prospects of leverage through taking industrial action, they’ve had to opt for something a little more downmarket and they’ve ended up at The Royal Society, 6-9 Carlton House Terrace, London. To sweeten the blow a little, those attending will be mollified with Champagne and canapés. If you want to hear a Kat Reflect, there are still some spaces. Details are available here

Anshika's appointment:a blow for Wallace and Gromit

Attaché now on the case. A press releaseinforms the IPKat that the UK's second Intellectual Property attaché has been appointed and will start work in India as part to the UK Government’s plans “to bolster trade relations and support IP and innovation-led businesses abroad”. The lucky person, Anshika Jha, will be based in the British High Commission in New Delhi and will be working with to help British businesses operating in India make the most of the business opportunities there [says Merpel, it will be good to know how much of this is related to enforcement of IP rights held byBritish businesses and how much will address the licensing of UK technology into India – and vice versa].

Tea at 3pm? You mustbe joking!*

IP TRANSLATOR delayed — but not by much. Thanks to the IPKat’s excellent friend Michael Edenborough QC the news can be broken to a disappointed world that the long-awaited ruling of the Court of Justice in Case C-307/10Chartered Institute of Patent Attorneys (the IP TRANSLATOR case, concerning which some people have still not yet read Richard Ashmead’s masterly three-part analysis of the issues here, hereand here) will not be handed down at 9.30am on Tuesday 19 June 2012. The new time is 3pm, just too early for tea.

* Illustration: Tea Time with Angel, by Monica Van de weer, available for purchase here

In this, the sixth and final post in her third Katonomics series, the ever-competitive Doctor Nicola Searle goes for Gold when she takes on her toughest assignment yet: an IP-sensitive economic appraisal of the Olympic Games:

What do Olympigs (a pork stand), Polympics, Monopolymics (economic structure of international sports), Holympics (church sponsored fitness classes) Woolympics (Harris tweed uniforms), and Olympits (deodorant manufacturer) have in common? They all potentially violate the London 2012 Olympics protected rights. Described by the London Organising Committee of the Games and Paralympic Games (LOCOG) as “extremely valuable assets,” what is the relationship between IP, the Olympics and economics?

Economic analysis of the Olympics lives up to its dismal science nickname. The analysis argues that wealth and population size predict the number of Olympic medals a country will win. This slightly undermines the whole international-display-of-athletic-prowess image of the competition. Instead, Greek researchers Vagenas and Vlachokyriakou findthat the size of the Olympic team, which is a measure of population and wealth, predicts 70% of the number of medals. Americans Bernard and Busse have similar findings but note that the host country typically enjoys a 2% bump in medals. Unfortunately, “you came all this way and lost because we have a statistical advantage” is unlikely to succeed as a sports chant.

Hosting the Olympics should have a positive impact on regeneration, tourism, legacy and cultural values. This tends to focus on the host city, but British-bases economists Walton, Longoand Dawsonfind that Brits outside London also support the games. They calculate that the positive impact of the games in the South West of England is around £173 million in addition to the £480 million positive impact in London. This is done using the Contingent Value Method which is based on asking how much the population is willing to pay for the event. The DCMS report uses a similar technique and argues a £3.2 billion overall positive impact on the UK over 10 years.

Like the valuation of IP, measurements of the value of events, particularly events that have yet to happen, include the valuation of intangibles. This leaves these valuations open for debate and, particularly as the valuations of the Olympics were conducted in pre-austerity times, subject to change. The DCMS report includes seven intangible benefits: feel-good factor, improving awareness of disability, inspiring children, legacy of sports facilities, environmental improvements, promoting healthy living and events. At the same time, there are six intangible costs listed: crowding, increased petty theft, security risks, local disruption, transport delays and, one to which I am contributing, excessive media coverage.

Surprisingly, respondents didn’t cite enforcement of IP right as either a cost or a benefit. The enforcement of Olympic IP right has come under some heat recently. On one side, control over these rights is an important funding mechanism andguarantees exclusivityfor event sponsors. On the other, the public may associate these IP rights as freely used cultural symbols which form part of the feel-good intangible benefits. For example, we have objections that estate agents were threatened with legal action for creating an Olympic ring display out of hula-hoops. And who wouldn’t want to eat at the banned Olympigs food stall, which presumably is an important part of a training diet?

For IP and the Olympics, therein lies the conflict. A public which sees the Olympics as cultural event and is funding a £9.3 billion public sector package, and LOCOG who has raised £670 million from sponsors who have paid for exclusivity (I should confess some confusion here as the DCMS financial report refers to the LOCOG funding as part of the £9.3 billion public sector funding package). Would the public be willing to pay an extra £670 million to have London 2012 cupcakes unregulated?

Regeneration of the Olympic sites is also an economic benefit. Barcelona is often touted as an example of the positive impact the games have on the local area. British-based economist Kavetsosfinds that the Olympics are responsible for a 2.1-5% increase in property prices in the area, which translates to £1.4 billion increase overall. The regeneration of East London should have long-term positive economic impact on the area.

At this point, my head is synchronised swimming with all of these numbers. It is much easier to tally the costs of the Olympics than the benefits. The positive impact figures I’ve mentioned should be net of the costs involved. The £9.3 billion public sector package doesn’t simply disappear -– it represents contracts for UK businesses, employment, development and the intangibles mentioned earlier.

Excuse me while I’m off to rehydrate with my Oympips orange-flavoured sports drink.

NOTE TO DOCTOR NIC’S DEVOTED READERS: while this post may mark the end of the third series of Katonomics posts, it does not mark the end of her contributions to this weblog. Stay tuned for further news, and be prepared to be delighted ...

Much-loved favourite question returns. The IPKat's friend Bansi Pattni has written in with a question which members of the blog team get asked quite often in one form or another, so this Kat thought it was time to open it up to the public rather than leave it in the murky realm of private correspondence. Writes Bansi:

"I am currently working for a company in the Netherlands and I am attempting to write some guidelines for the use of registered trade marks within the company. While doing so, I have come across wordmarks for computer programs which are not registered but which the company considers as its trade marks. The word marks are distinct and have the possibility of being registered. However, they are only used internally within the company so there seems to be no incentive to register them. In the event that one of these wordmarks is used in marketing material or client reports, I was thinking of suggesting the use of the ™ symbol.

After doing some research I found that, in general, US sources seem to advocate the use of ™ for unregistered trade marks whereas UK sources state that the use of ™ implies the trade mark is unregistered but does not speak of where it can be used and if it really should be used. In short, internet sources and textbook answers are not sufficient and neither is the opinion of just one professional.

There appear to be no set rules on whether to use ™ or not so I was hoping you may be able to provide me with your own professional opinions on whether ™ should be used for unregistered trade marks. I am also curious to know how its use is received by the IP community in different countries".

This Kat’s position is that, in the jurisdictions with which he is most familiar, the use of ™ is not explicitly controlled by statute or case law and that it is no more than an indication that the business that uses it regards the sign to which it is appended as being a trade mark even though it may not have been registered as such – and even if no application has been made to register it.

The bigger the 'TM', the moredifficult it is so miss ...

Be that as it may, use of the ™ may confer some benefits. In the first place, where the distinctive character of an unregistered sign is being contemplated in the course of registration proceedings, it often happens that an applicant’s mark is refused registration on the basis that the relevant consumer, seeing it, would not realize that it was a trade mark (rather than an advertising or promotional slogan, a description of goods or services or as an ornament or embellishment of the packaging). If such a sign is however accompanied by a ™, it may be more difficult to draw the conclusion that the relevant consuming public would not consider it to serve a trade mark function.

Additionally, in the event that an action for passing off or unfair competition is brought in respect of an unregistered sign which is followed by a ™, its presence may influence the decision whether to grant provisional relief and, if the plaintiff succeeds, the flagrant nature of the infringement and therefore the scale of the damages awarded.

Merpel says, whatever else may be said about ™s, they’re not very pretty. There ought to be a better way to handle this. How about an official depository of signs used as unregistered trade marks, together with a list of goods or services covered by their non-registration …?

Sunday, 27 May 2012

This Kat likes her moral rights cases (for instance see her earlier KatPost here). So she was very interested to hear that Recorder Douglas Campbell, sitting in the Patents County Court, England and Wales, had given judgment in a moral rights case on 18 May 2012 in Emma Delves-Broughton v House of Harlot. Every day since then, she has been checking the usual suspects for a transcript of the decision -- but currently the case remains as unreported.

This Kat has however ascertained the following so far:
Ms Delves-Broughton is a professional photographer (her website bears the legend: "WARNING: This site contains images of partial nudity up to Art Nude"). She took a photograph of an unnamed female model in a forest wearing a garment supplied by theHouse of Harlot. ("CLICK TO ENTER HOUSE OF HARLOT AND TORTURE GARDEN CLOTHING FOR LATEX RUBBER FETISH FASHION"). Ms Delves-Broughton gave a copy of the image to the model with a letter which only granted the model permission to use the image on her own website for personal use. If anyone else wanted to use it, the model should let Ms Delves-Broughton know. The model however presented the image to the House of Harlot, which then proceeded to modify the image by reversing it and removing the forest background [says the IPKat, it's just as well they didn't remove anything else ...]. It then put this second image on its website.

When Ms Delves-Broughton complained, the House of Harlot promptly took down the second image. Ms Delves-Broughton then commenced proceedings for (a) copyright infringement and (b) derogatory treatment of her work. The House of Harlot responded by arguing that (a) it had a licence to use image by virtue of subsequent oral discussions between the model and Ms Delves-Broughton and (b) the changes it made to the image did not constitute derogatory treatment.

Douglas Campbell decided in favour of Ms Delves-Broughton on both claims.
In respect of the claim of copyright infringement, he found that it was inherently implausible that Ms Delves-Broughton and the model had a discussion during the shoot to the effect that the House of Harlot was granted a licence to use the image. He was critical of the credibility of the model, particularly as her oral evidence (that a licence to the House of Harlot was granted) went further than her witness statement (which reiterated the understanding outlined in Ms Delves-Broughton’s letter outlining use of the image). He preferred the evidence of Ms Delves-Broughton and found that she had granted no such licence to the House of Harlot.

On the issue of damages for infringement, the fact that the image had appeared on eight pages of the website did not mean that there were eight uses for damages purpose. the judge stated that there had only been a single use: on the website. He followed the guidelines set out in the National Union of Journalists and awarded £675 for the infringement claim.

In respect of the claim of derogatory treatment of the work, Douglas Campbell noted that considerable time and effort had done into the composition of the image and that it had been important for the forest to appear for artistic reasons. Accordingly, he found that the changes amounted to distortion, but not mutilation, and were not prejudicial to Ms Delves-Broughton’s honour or reputation. Nonetheless, there was a distortion and therefore derogatory treatment of the work.

On the issue of damages for derogatory treatment, taking everything into account, the court awarded £50 damages. Normally the primary remedy in such cases was an injunction, but that remedy was inappropriate in the present proceedings as the House of Harlot had already removed the photograph from its website.

The IPKat and Merpel ask: has anyone been able to get their paws on a judgment or statement of reasons?

Friday, 25 May 2012

Message to Google. The IPKat is not sure whether the improvement in performance of the new Google software since he posted his open letter to the company is simply a random event or is a direct consequence of the kind intervention of the anonymous IPKat-reading Google personality who read it and said he'd see if he could get it actioned. Either way, this entire post has been composed without any technical hiccups at all -- and it's a very long time since the Kat has been able to say that. Thanks, he says. Hope you don't get into trouble with your boss, adds Merpel.

"I spy ..."

That EU IP Observatory! The latest score on the IPKat’s sidebar poll shows that there is little respect or enthusiasm for the recently-announced EU Intellectual Property Observatory. If you’d like to add your opinion, whether by offering your support, by expressing your rage or by anything in between, there are still a few days in which to do so.

Unitary Patent Update. The AmeriKat does normally intrude on the Friday Fantasies but she’s doing so here. She tells the IPKat that, further to her update yesterday, the European Parliament's website has now been updated to show that the plenary sitting and first reading of the unitary patent provisions will take place on 13 June with the vote to be held on 14 June 2012.

The course was okay, but studentlife on the intergalactic IP coursewas a bit sparse ...

Patents at a distance. Prompted by yesterday’s post yesterday about distance learning and copyright ("Why distance learning has come a long way", here), the IPKat has received this request for information from a keen reader:

I have been looking for a distant learning LLM relating to patents or more specific, to patent litigation. I know of three European possibilities: Nottingham (patent litigation), CEIPI in Strasbourg and Hagen in Germany. Are there any other options, especially in the UK? I am interested in Nottingham, although I find it very UK specific. Are there any plans of changing this to make it more European or is there another course offered? I am thinking in view of the European Patent Court, if this ever becomes reality. I have asked in Nottingham, but haven´t received anything other than the programme of the litigation LLM.

While we’re on the subject of patent litigation, this Kat has something of a vested interest in IP dispute resolution this summer. This is because he’s running a little stand-alone workshop on the subject as part of the IP Dispute Resolution offering by LexisNexis at the end of June. The conference itself runs from 28 to 29 June, but the workshop is on the afternoon of the day before. You can click for details hereand, if you use the VIP code FKW82288IPK for readers of this weblog, you can even get a very generous 25% discount.

Safe and sound in Canada. A katpat goes to the IPKat’s effervescent friend Lorraine Fleck for news that, after the IPKat hosted her note on the registration of sound marks in Canada in the wake of the application to register the roar of the MGM lion, four further applications for sound-based trade mark have now been received. You can listen to them here.

We all know that certain trade marks can be too successful, with the result that they become the generic name for the good or service that they are intended to identify. But what happens when a copyright work becomes "too" successful? Is the result something akin to genericity in trade mark law -- or is something else at work? Before you accuse this Kat of having had too much catnip, consider the following.

Nearly 20 years ago, the Israel Supreme Court had to decide whether a drawing based in large part on the figure of Donald Duck constituted copyright infringement. One of the claims made by the defendant was that the figure of Donald Duck had become such an integral part of modern culture that it no longer could enjoy copyright protection. This claim was rejected and the defendant ultimately was found liable for infringement. However, this Kat has continued to be intrigued by the notion that there may be certain works that are so well-recognized that certain aspects of the work take on a public life and meaning of their own, even if they do not enjoy copyright protection per se.

Spurred on by this intriguing question, this Kat has sought to formulate circumstances in which aspects of protected copyright take on a special role in public consciousness--what we will call "generic copyright". He has come up with at least two variant possibilities for generic copyright. In the first, the element is detached from the work, but its public fame continues to be connected with the underlying copyright work. In the second, the element is not merely uncoupled from the work, but it takes on a public meaning that does not depend upon its original creative context. This Kat has decided that the time has come for him to float this notion with the readership and so--a proposed exemplary list of generic copyright follows.

1. The voice of Jacob, the hands of Esau--And so it is written in Genesis (27:22)--"So Jacob came close to Isaac his father, and he felt him and said, 'The voice is the voice of Jacob, but the hands are the hands of Esau' "(New American Standard Bible). The phrase has become a wide-spread cultural staple whenever one wants to express the notion of inconsistent facts from what should be a single source that should be yielding consistent information.

2. Faustian bargain--I suspect that most of us have not read this greatest of all German literature (even not in translation, shame on us), but the notion of making a pact with the Devil (Faust traded his soul to the devil in exchange for unlimited knowledge and worldly pleasures), with all of the resulting unpleasantries, has become a standard motif of western culture.

3. "Toto, I don't think we're in Kansas anymore." - Who can forget that scene from the Wizard of Oz, when Dorothy finds herself removed from her Kansas cabin due to the tornado, surrounded (at least at knee-length), by those uniquely-voiced Munchkins. Her trenchant comment to her dog Toto has become a standard cultural fare for expressing the notion that one is in a new, unfamiliar situation.

4. "Phony"--Never has a single word from a work of modern fiction taken on a life of its own outside of its original literary moorings. We are speaking about J.D. Salinger's classic, "The Catcher in the Rye" (you may agree or disagree whether it is the great American novel, but this Kat continues to read the book every five years, much to the bemusement of Mrs Kat). The main character, Holden Caulfield, accuses almost every one (at least older than he) of being a "phony." The term has come to connote the dichotomy between the sweet world of childhood innocence and the unpalatable world of shallow adult hypocrisy. Before Salinger's creation, would any of us ever have thought to describe that pompous investment banker down the hall as a "phony"? Today the use of the term is so widespread that we tend to forget its origin.

5. "Catch-22"--The phrase, which is the name of Joseph Heller's monumental work on the potential insanity of armies and war, has come to mean "a problematic situation for which the only solution is denied by a circumstance inherent in the problem or by a rule" (Merriam-Webster.com). Be honest--is there anyone out there who has not referred to a circumstance as "a Catch 22" situation? As European leaders struggle to sort out the current financial crisis, is the current plan to adopt austerity to achieve growth "a Catch 22"?.

6. "My Way"

"And now the end is near
And so I face the final curtain.
My friend I'll say it clear
I'll state my case of which I'm certain.

I've lived a life that's full
I travelled each and every highway.
And more, much more than this
I did it my way."

Paul Anka's song is so closely identified with Frank Sinatra's rendition that it is perhaps the quintessential example of why we need to protect performer's rights as a neighbouring right. More generally, the phrase "My Way" has become a pithy means to express the actions of a person who lives life on his/her own terms. For those of you old enough to remember, the changes brought about by Mikhail Gorbachev to the former USSR in the 1980s were described as the "Sinatra Doctrine"--Gorbachev did it "his/my way."

7. "Ground Hog Day"--In the movie by the same name, actor Bill Murray plays an egocentric Pittsburgh TV weatherman (can any weatherman from Pittsburgh really be egocentric?) who gets sent to the town of Punxsutawney (this is the real name) to cover the annual Groundhog Day event. If the groundhog sees its shadow, we are in for six more weeks of winter (this is a true tradition in Punxsutawney). Murray finds himself repeating the same day over and over again, waking up to an alarm clock just before 6:00 am each morning. After trying hedonism, suicide attempts, and everything in between, he reexamines his life and priorities. In a short period of time, this phrase has come to mean any situation which we seem to be repeating, until we perhaps alter, our behaviour.

7. "Hotel California"

"Last thing I remember,
I was running for the door
I had to find the passage back
To the place I was before
"Relax, " said the night man,
"We are programmed to receive.
You can check-out any time you like,
But you can never leave!"

Has any song ever conveyed imagery as strong as this song by the Eagles? And is there any better way of expressing the notion that it is easy to enter, but difficult, maybe even impossible to leave a situation? Once again, referring to the economic challenges facing the Euro, is Euro membership like the Hotel California, or not? We may learn the answer very soon.

8. "If you build it, he will come"--One of the all-time great fantasy movies-"Field of Dreams"--tells the story of a farmer in Iowa who is spurred on to construct a baseball field in corn fields in response to the exhortation of the unseen voice, who implores--"If you build it, he will come". I leave it to you to discover who the "he" was. Suffice to say, the phrase has become an eloquent way of expressing the idea of pursuing one's inner voice to achieve a goal, as quixotic (I suppose we could have this word to our list) as it might be seem to some.

Well, dear readers, if you have followed this Kat all the way to the end, here is his exemplary list of generic copyright. Maybe it is a bit culture-bound, but that may be unavoidable. Comments anyone?

Thursday, 24 May 2012

A picture of what the AmeriKat wouldlike to be doing right nowideally with some gelato in tow (or is that "ice cream"?)

The sun is shining down in London, the people are smiling and all seems well in the world, except, that is, for the threatening unitary patent storm clouds growing over Brussels. "Oh how dramatic, AmeriKat!", you say, "There is no need to ruin our second sunny day all year with your Doomsday predictions of the unitary patent package.". Oh, but she must. She does, however, promise to make it quick. In fact she only has three points to share with you:

1. European Parliament vote: With the upcoming meeting of the Competitiveness Council meeting this Wednesday, the AmeriKat was alerted to the European Parliament's tabling of the plenary sitting date and first reading of the unitary patent package first scheduled for 11 June 2012, but now scheduled for 13 June with the vote on 14 June 2012. Can this be construed as a confident Statement of Intent to get the patent package approved come what may or as a cautiously optimistic "pencilling-in"?

2. Rules of Procedure news: Following the first circulation of the Rules of Procedure to stakeholders in April, Rules of Procedure Committee Chair, Kevin Mooney (Simmons & Simmons) tells the AmeriKat that they are now on the 8th draft of the Rules to which they have received 31 detailed responses. The ninth draft will go to the Commission/Danish Presidency today so that it is available for the Competitiveness Council meeting on Wednesday. After the meeting, the draft should be more widely distributed, but as of yet there is no news on a public consultation. "We are waiting", says the AmeriKat, tapping her paws impatiently.

3. Update on request for unredacted version of Legal Services Opinion:On Sunday (or Monday, depending how late you were up), the AmeriKat reported on the confirmatory application request she stumbled upon for access to the unredacted version of the Opinion of the Legal Service (document here) on the compatibility of the draft agreement with the CJEU's Opinion 1/09. Two of her lovely readers responded, including the anonymous requstor, who alerted her to the Council's response to the application (found here) who refused to provide access to the unredacted document. However

"Denmark, Estonia, Slovenia, Finland and Sweden cannot concur with the reasoning in the draft reply, which seems contradictory in first arguing that the negotiations are entirely outside the Council’s decision-making structures but that there still is a need to protect the Council’s decision making process (because the draft Agreement and the two draft Regulations form a “package").

As regards the contents of the opinion, it would seem that even if a possible harm to decision making or to the protection of legal advice could be demonstrated, there would be an overriding public interest in handing out the information, or at least more significant parts of it in line with Article 4(6) of Regulation 1049/2001."

Too right! The AmeriKat understands the UK government also did not support the Council's reply. Stay tuned for a Katty post on European legislative transparency coming to your computer screen and e-mail inbox very soon.

If you were busily digesting the Chocolate Bunny ruling earlier today, you might have missed a further trade mark ruling from the European Union's senior court: Case C‑196/11 P, Formula One Licensing BV v OHIM, Global Sports Media Ltd, on an opposition relating to a Community trade mark that was filed a little over eight years ago and which may still have a few more years' mileage to it.

"The Court of Justice sets aside the judgment of the General Court which failed to acknowledge, in relation to trade marks, the distinctive character of the ‘F1’ sign

Neither OHIM nor the General Court are competent to call into question the validity of national trade marks capable of opposing the registration of a Community trade mark

In April 2004, Racing-Live SAS [a company which was subsequently replaced by Global Sports Media Ltd as proprietor of the trade mark applied for] filed an application for registration of a Community trade mark ... for a figurative trade mark (right) in respect of various goods and services (magazines, books, publications, reservation of tickets for shows, and
arranging competitions on the Internet).

However, Formula One Licensing BV opposed that application. The opposition was based on the existence of an international word mark and two national word marks for ‘F1’, and the Community figurative mark (left), covering the same products and services as those indicated in RacingLive SAS’ application for registration.

By a decision given in October 2008, OHIM dismissed the opposition, considering that there was no likelihood of confusion between the trade mark applied for and those of which Formula One Licensing was the proprietor. Moreover, OHIM stated that the word element ‘F1’ was a descriptive element in the trade mark applied for.

Formula One Licensing subsequently brought an action for the annulment of OHIM’s decision before the General Court. By its judgment of 17 February 2011, the General Court dismissed the company’s action and confirmed OHIM’s decision. Formula One Licensing now claims that the Court of Justice should set aside the judgment of the General Court.

In its judgment delivered today, the Court of Justice notes, first, that that the Community trade mark does not replace the national trade marks of Member States and that those two types of trade mark co-exist in the economic life of the EU. The Court states that in this dual system of trade marks, the registration of national trade marks is solely a matter for the Member States and that, therefore, OHIM and the General Court are not competent for either the registration or the declaration of invalidity of those trade marks. Accordingly, the Court notes that the validity of a
national trade mark may not be called into question in proceedings opposing the
registration of a Community trade mark, but only in cancellation proceedings brought in the Member State in which the national trade mark was registered [quite right, though isn't strange that, while a national Community trade mark court can rule a CTM to be invalid, the organs of the CTM can't do the same to national marks?].

In addition, according to the Court, it cannot be found, in such opposition proceedings, that a sign identical to a national trade mark is devoid of distinctive character, that is, the ability to allow the public to associate the products and services designated by the sign with the company which applied for its registration. Such a finding would be likely to eliminate the protection which national trade marks are supposed to provide[Exactly! That's why the argument was raised, wasn't it?].

Hence, the Court notes that, in a situation such as that in the present case, OHIM and, consequently, the General Court, must verify the way in which the relevant public perceives the sign which is identical to the national trade mark, solely in relation to the mark applied for, and evaluate, if necessary, the degree of distinctiveness of that sign. In that respect, the Court points out that it is necessary to acknowledge a certain degree of distinctiveness of a national mark
on which an opposition against the registration of a Community trade mark is based.
In those circumstances, the Court finds that, in finding that the sign ‘F1’, identical to the national trade marks of Formula One Licensing, was devoid of distinctive character, the General Court called into question the validity of those trade marks in proceedings for registration of a Community trade mark and therefore infringed the regulation on the Community trade mark.

Therefore, the Court sets aside the judgment of the General Court and, since it is not in a position to give final judgment in the matter, refers the case back to the latter".

Says the IPKat, there are interesting issues at stake here. One is the presumptive validity of every national trade mark, which is a matter of law, versus the reality that some trade marks may have lost whatever distinctive character they had by the time a later Community trade mark is applied for: what is the value to the market place of preserving the effect of a monopoly which is based on a presumption that can be undermined? A further question relates to national marks which are cited in support of an opposition but which are open to challenge and apparently invalid on the basis that they are in conflict with a protected geographical indication (this can easily happen in the case of a newly acceding EU Member State). The courts must find a comfortable balance between the need to balance commercial and legal certainty, the protection of investment in brands and branded businesses, competition and consumer choice

Adds Merpel, the moral of today's rulings is that, so far as distinctive character of a trade mark is concerned, it's better to be involved in the motor racing business than in the manufacture of chocolate rabbits.

IPKat Policies

This page summarises the IPKat policies on guest submissions and comments. If you have posted a comment to one of our blogposts and it hasn't appeared, it may be because it doesn't match our criteria for moderation. To learn more about our guest submissions, comments and complaints policy and the procedure for lodging a complaint click here.

Has the Kat got your tongue?

Just click the magic box below and get this page translated into a bewildering selection of languages!